Ram Kishore Vs. State of U.P [1966] INSC
89 (28 March 1966)
28/03/1966
ACT:
Trade and Merchandise Marks Act, 1958 (Act 43
of 1958),. ss.
77, 92-Time prescribed for launching
prosecution-Date of first discovery of infringement of trade mark whether relevant
for reckoning such time-Plea of acquiescence when can be raised.
HEADNOTE:
In 1955 the complainants protested to the
appellant that he was infringing their trade-mark but no further action was
taken by them at that time. In November 1960, the appellant was found in
possession of labels and tobacco tins carrying marks deceptively similar to the
complainants' trade mark.
After investigation the police lodged in
March 1961 a charge-sheet against the appellant in respect of alleged offences
under s. 78 read' with s. 77 and P. 79 of the Trade and Merchandise Marks Act
1958. The trial Magistrate convicted the appellant who was however acquitted by
the Sessions Judge principally on the ground that the prosecution was barred as
it was not instituted within the period prescribed by s. 92 of the Act. In
appeal against the order of acquittal the High Court convicted him but granted
him a certificate under Art, 134 of the Constitution.
HELD:The period under s. 92 of the Trade and
Merchandise Marks Act, 1958 commences to run from the date of the commission of
the offences charged or from the date of discovery by the prosecutor of the
offence charged. The period does not have to be reckoned from the first
discovery of infringement of trade-mark by the prosecutor. In this respect s.
92 of the Act of 1958 is materially different from s. 15 of the Merchandise
Marks Act 4 of 1889. [73A-D] Ruppell v. Ponnusami Tavan and Anr., I.L.R. 22 Mad
488 and Dau Dayal v. State of Uttar Pradesh, A.I.R. 1959 S. C. 433,
distinguished.
Abdulsatar Khan Kamruddin Khan v. Ratanlal
Kishenalal, I.L.R. 59 Bom. 551 and Emperior v. Chhotalal Amarchand, I.L.R.
(1937) Bom. 183, referred to.
There was nothing to substantiate the
appellant's plea based on s. 77 of the Act that the complainants had acquiesced
in his use of the deceptive trade-mark.
CRIMINAL APPELLATE JURISDICTION: Criminal
Appeal No. 37 of 1964.
Appeal from the judgment and order dated
November 26, 1963 of the Allahabad High Court in Government Appeal No. 782 of
1962.
S. P. Sinha, G. L. Sanghi, Ganpat Rai, E. C.
Agarwala, S. S. Khanduja for P. C. Agarwala, for the appellant. Atiquor Rehman
and O. P. Rana, for the respondent.
Antiquor Rehman and O.P. Rana,for the
respondent.
69 The Judgment of the Court was delivered by
Shah, J. The appellant was charged before a Magistrate, 1st Class, at Varanasi
with being, on November 25, 1960, in possession of counterfeit labels which
could be used to pass off his "tobacco tins" as the goods of M /s
Nandoo Ram Khedan Lal bearing 'Titli" (butterfly) trade-mark, and with
being in possession for ale of "tobacco tins" bearing counterfeit trademarks
of the genuine "Titli" brand trademark of M/s Nandoo Ram Khedan Lal.
The Trial Magistrate convicted the appellant and sentenced him to suffer simple
imprisonment for three months for offences under s. 78 read with s. 77 and
under s. 79 of the Trade and Merchandise Marks Act 43 of 1958, and directed the
two sentences to run consecutively. In appeal to the Court of Session,
Varanasi, the order passed by the Trial Magistrate was set aside and the
appellant was acquitted principally on the ground that the prosecution was
barred because it was not instituted within the period prescribed by s. 92 of
the Act. The High Court of Judicature at Allahabad however set aside the order
of acquittal and restored the conviction, but reduced the sentence on each of
the charges to a fine of Rs. 1,000/-.
With certificate granted by the High Court
under Art. 134 of the Constitution, this appeal has been preferred.
M/s Nandoo Ram Khedan Lal-who will
hereinafter be called "the complainants"-carry on in the town of
Varanasi, business in "chewing tobacco". They were marketing their
product for the last many years under a trade-mark styled "Titli"
(butterfly). The label on the containers of "chewing tobacco" shows
figures of three butterflies on yellow-green background and the legend
"Titli" in Devnagari and English characters. The appellant who
carried on business also in "chewing tobacco" commenced market his
goods in the name of "Titli" (partridge). The label on the containers
had figures of four butterflies on leaf-green background, and the legend
"Titli" in Devnagari and English characters. The colour schemes of
the butterflies in the complainants' label and of the butterflies in the
appellants label were substantially similar.
The complainants gave information to the
police in November 1960 that the appellant had infringed their trade-mark by
marketing his goods under a trade-mark calculated to deceive the purchasers
into believing that they were purchasing the product of the complainants. The
police submitted a charge sheet against the appellant for offences under s. 78
read with s. 77 and, s. 79 of the Trade and Merchandise Marks Act, 1958. The
Trial Magistrate observed that there was' close resemblance between the label
used by the complainants and the label used by the. appellant, and that a vast
mejority of users of such tobacco being illiterate were likely to be
"carried" 'away by' a pictorial' device of "Titli" 70
(butterfly)" since they were incapable of reading and understanding the
"descriptions on the label in Devanagri and in English". With this
view the Sessions Judge and the High Court agreed. Before us, no substantial
argument has been advanced which would justify us in taking a different view on
this question.
It was however contended for the appellant
that the case against him must still fail because the prosecution was barred by
S. 92 of the Trade and Merchandise Marks Act, 1958, and also because there was
such acquiescence on the part of the complainants as would justify an inference
that they had assented to the appellant using the trade-mark under which his
product was marketed. To appreciate these two contentions, it is necessary to
refer to certain facts.
Some time before 1955 the appellant had
started marketing his goods under the trade-mark "Titli": there is
however no evidence about the general get-up of the label on the containers of
"chewing tobacco" marketed by him at that time. On January 6, 1955
the complainants wrote a letter to the appellant claiming that they were the
sole proprietors of "Titli" brand, that "Titli" was their
registered trademark, and the appellant had "with criminal intention
started making illegal and unlawful use of that trade-mark" and had copied
their trade-mark and was using it on similar but inferior "chewing
tobacco" and was passing off his goods in the market as the product of the
complainants; and on those allegations the complainants called upon the
appellant to desist from selling or disposing of any of the goods with labels
resembling to the complainants' trade-mark and thereby deceiving the public
into purchasing the appellant's product when the public desires to purchase the
complainants' product and making several other incidental requisitions. In
reply, the appellant denied that the complainants were the sole proprietors of
"Titli" trade-mark and that in any event the appellant had not used
the trademark "Titli" on any goods manufactured by him. The appellant
also claimed that he had been marketing his goods in the name of
"Titli" for many years and that the complainants were seeking to pass
off their product as that of the appellant. After this correspondence no steps
were taken by the complainants against the appellant till November 1960.
The appellant was on information lodged by
the complainants prosecuted for offences under S. 78 read with S. 77 and s.
79 of the Trade and Merchandise Marks Act,
1958. The appellant submitted that whereas the complainants had on their own
admission learnt about infringement of their trade-mark in 1955, criminal
proceedings started in November 1960 were barred under S. 92 of the Trade and
Merchandise Marks Act, 1958. It may be noticed however that the offences
charged against the appellant 71 were alleged to have been committed on
November 25, 1960, an& the charge-sheet was lodged in the Court of the
Magistrate, 1st Class, on March 22, 1961. Section 92 of the Trade and
Merchandise Marks Act, 1958, insofar as it is material, provides:
"No prosecution for an offence under
this Act........................... shall be commenced after the expiration of
three years next after the commission of the offence charged, or two years
after the discovery thereof by the prosecutor, whichever expiration first happens."
In substance the appellant in relaying upon the bar of S. 92 seeks to
substitute for the words "after the discovery" the words " after
the first discovery", and for the words "after the commission of the
offence charged" the words "after the commission of the first
infringement of trade-mark". The Legislature has deliberately not used
those expressions, and there is no warrant for substituting them in the section
and thereby substantially modifying the section.
Counsel for the appellant however submitted
that in interpreting S. 15 of the Merchandise Marks Act 4 of 1889, which is
similar to s. 92 of Act 43 of 1958, the Madras High Court had in Ruppell v.
Ponnusami Jevan and Another(1) held that a prosecution under s. 15 of the
Merchandise Marks Act 4 of 1889 commenced after the expiration of the period
prescribed by the Legislature from the date when the infringement was first
discovered, is barred and that this Court had in Dau Dayal v. State of Uttar
Pradesh(1) affirmed that view. In Ruppell's case(1) the accused was charged
with committing an offence punishable under S. 15 of the Indian Merchandise Marks
Act, 1889, on a complaint that the accused had infringed the complainant's
trade-mark. It appeared at the trial that the complainant had discovered in
1893 that goods were sold by the accused marked with a trade-mark which was
similar to his trade-mark, and the complainant had called upon the accused to
discontinue user of the counterfeit trade-mark and to render an account of
sales made by him.
In 1898 the complainant prosecuted the
accused for infringing his trade-mark. The High Court of Madras held that as
the complainant did not show that he believed the use of the alleged
counterfeit trade-mark had been discontinued after the first discovery and
protest in 1893, prosecution of the accused in 1898 under s. 15 of the Indian Merchandise
Marks Act, 1889, was barred. This view was followed by the Bombay High Court in
Abdulsatar Khan Kamruddin Khan v. Ratanlal-Kishenlal,(3): The Court observed in
that case that under S. 15 of the Indian Merchandise Marks Act, 1889, if the
offence of infringement of a trade or property mark is a continuing one, and if
no discontinuance is proved, time runs from the first (1) I.L.R. 22 Mad. 468.
(3) I.L.R. 59 Bom. 551. (2 ) A.I.R. 1959 S.C.
433.
72 instance of infringement or from the first
discovery of the infringement. Abdulsatar Khan's case(1) was however overruled
by a full bench of the Bombay High Court in Emperor v. Chhotalal Amarchand.(2)
In that case the Court dissenting from the judgment of the Madras High Court in
Ruppell's case(1) and overruling the decision in Abdulsatar Khan's case(1) held
that under s. 15 of the Indian Merchandise Marks Act, 1889, starting point of
limitation in all cases is the date of the offence charged.
In Dau Dayal's case,(1) Venkatarama Aiyar,
J., incorporated substantially the whole of the judgment in Ruppell's case:
(3) but in Dau Dayal's case(1) the matter in
dispute was entirely different. In that case the accused was prosecuted for
offences punishable under ss. 420, 482, 483 & 486 I.P.
Code on the allegation that he was in
possession of Bidis which bore counterfeit trade-marks. A complaint was filed
against the accused on March 26, 1954, and after investigation by the police, a
charge-sheet was filed in the Court of the Magistrate on September 30, 1954.
The accused contended that the offence was discovered on April 26, 1954, and
since process was issued by the Magistrate on July 22, 1955, i.e. more than one
year after discovery of the offence he could not, because of S. 15 of the
Merchandise Marks Act, 1889, be prosecuted. This Court rejected the plea raised
by the accused. An excerpt from the judgment in Ruppell's case(1) was
incorporated only to indicate the general tenor of s. 15, and not with a view
to express approval of all that was observed therein.
We are however in this case not called upon
to consider whether Ruppell's case(1) was correctly decided. That case was
decided on the interpretation of s. 15 of the Merchandise Marks Act, 1889.
Suffice it to say that the Legislature has in enacting the Trade and
Merchandise Marks Act 43 of 1958 made a substantial departure from the language
used in S. 15 of Act 4 of 1889. For the sake of convenience the material parts
of the two sections may be set out in juxtaposition:
Section 15 of Act 4 of 1889 No such
prosecution..........
shall be commenced after the expiration of
three years next after the commission of the offence, or one year after the
first discovery thereof by the prosecutor, whichever expiration first happens.
(1) I.L.R. 59 Bom. 551. I.L.R. 22 Mad. 488.
Section 92 of Act 43 of 1958 No prosecution
for an offence under this Act............ shall be commenced after the
expiration of three years next after the commission of the offence charged, or
two years after the discovery thereof by the prosecutor, whichever expiration
first happens.
(2) I.L.R. (1937) Bom. 183.
(4) A.T.R. 1959 S.C. 433.
73 The Legislature in enacting s. 92 of Act
43 of 1958 has clearly made departure from s. 15 of Act 4 of 1889 in important
respects. Whereas under s. 15 prosecution had to be commenced within three years
next after the commission of the offence or within one year after the first
discovery thereof by the prosecutor, under s. 92 the prosecution must be
commenced before the expiration of three years next after the commission of the
offence charged, or two years after the discovery by the prosecutor of the
offence charged, whichever expiration-first happens. Under s. 92 it is plain
the period commences to run from the date of the commission of the offence
charged or from the date of discovery by the prosecutor of the offence charged.
The argument which could be raised under s. 15 and was approved in Ruppell's
case(1) that the Legislature intended to provide that the period shall commence
from the first discovery thereof by the prosecutor is plainly not open to the
offender infringing the provisions of the Trade and Merchandise Marks Act under
s. 92. The period has to be computed for the purpose of the first part of the
section from the date of the commission of the offence charged, and under the
second part from the date of discovery of the offence charged, and not from the
first discovery of infringement of trade-mark by the prosecutor.
The plea that the complainants had assented
to the use of the trade-mark by the appellant, and on that account the latter
could not be said to have falsified a trade-mark or to have falsely applied the
trade-mark, is without substance. Section 77, it is true, provides that a
person shall be deemed to falsify a trade-mark who either(a) without the assent
of the proprietor of the trade mark makes that trade mark or a deceptively
similar mark; or (b) falsifies any genuine trade mark, whether by alteration,
addition, effacement or otherwise.
If there is assent of the proprietor to the
use by the accused of a trade mark which is deceptively similar, there would be
no falsification or false application of the trade mark: but protest against
infringement of the complainants' trade mark cannot be regarded as assent to
the use or application of the false trade mark.
The High Court has on a review of the
evidence held that there was no acquiescence by the complainants from which
assent may be inferred, and we see no reason to differ from that finding.
The appeal therefore fails and is dismissed.
Appeal dismissed.
I.L.R. 22 Mad. 488.
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